[Pct] Combine two priority filings from different countries and applicants into one PCT

Fri Jun 13 17:32:58 UTC 2025

I think Ryan's question is --

    -- if I file these as one combined application, am I creating any new
problems that wouldn't exist if I filed two separate PCT applications?

I think the answer is no.

But as Rick and Roger note, there are a number of underlying gotcha's out
there that you have to look at.   Be sure to analyze each chain (priority,
ownership, foreign filing license, etc.) separately and fully.

On Fri, Jun 13, 2025 at 1:17 PM Roger Browdy via Pct <pct at oppedahl-lists.com>
wrote:

> Not to mention the possible problem of an Indian inventor first filing A2
> outside of India without a foreign filing license or its equivalent in
> India.
>
>
>
> *Roger L. Browdy*
>
> Partner
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> *From:* Pct <pct-bounces at oppedahl-lists.com> *On Behalf Of *Rick Neifeld
> via Pct
> *Sent:* Friday, June 13, 2025 10:43 AM
> *To:* For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice. <pct at oppedahl-lists.com>
> *Cc:* Rick Neifeld <richardneifeld at gmail.com>; Ryan Gleitz <
> rgleitz at lsk-iplaw.com>
> *Subject:* Re: [Pct] Combine two priority filings from different
> countries and applicants into one PCT
>
>
>
> "If there was no assignment from A1 to A2, what would be different
> regarding the PCT filing?"  - If no assignment before filing of the PCT,
> then the PCT would have failed to comply with the successor in title
> provisions of Paris article 4.
>
>
>
> "They have a corporate assignment from A1 to A2 for the India
> application." - Is there an unbroken chain of title under the applicable
> choice of laws provision?  Does Indian law vest ownership in a corporate
> entity disrespecting natural law rights, if any, of the inventors? Did the
> inventors assign in writing the first application to A1, and did the other
> inventors assign from the second application to A2?
>
>
>
> Is the subject of any claim not supported entirely by a single priority
> application?  If not, then you have an issue.
>
>
>
> Bodenhousen does not address the question whether Paris 4A(1)'s  "one" of
> the countries of the Union has preclusive effect. And I am not aware of any
> case raising that issue regarding entitlement to Paris priority.
>
>
>
> Rick
>
>
>
>
>
> On Fri, Jun 13, 2025 at 8:28 AM Ryan Gleitz via Pct <
> pct at oppedahl-lists.com> wrote:
>
> Hi all, I’d appreciate any insights into or pitfalls to avoid in this
> scenario:
>
>
>
> Applicant A1 files a priority founding application in India.
>
> Applicant A2 files a priority founding application in US on the same day.
>
> They have different inventors but related subject matter.
>
>
>
> They want to combine specs into a single PCT filed by Applicant A2. They
> have a corporate assignment from A1 to A2 for the India application.
>
>
>
> Does anyone know of anything I should to now to avoid trouble at PCT
> and/or national stage?
>
>
>
> If there was no assignment from A1 to A2, what would be different
> regarding the PCT filing?
>
>
>
> Thanks
>
>
>
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> --
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> Best regards
>
> Rick Neifeld, J.D., Ph.D.
>
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